A co-publishing agreement does not novate original publication rights without clear substitution by all contracting parties.

Plaintiff No. 1 claimed to be the author and first owner of copyright in the books Applied English Grammar and Composition Anglo Bengali (For High Schools) and Beginner’s Applied English Grammar, Composition and Translation (Anglo-Bengali—For Beginners).

Under agreements dated 15 June 2001 and 22 April 2002, Plaintiff No. 1 granted Defendant No. 1 rights to print and publish the books, while copyright ownership allegedly remained with the author/copyright holder.

The agreements contained no express duration. The plaintiffs contended that, under Section 19(5) of the Copyright Act, 1957, the grants were deemed to last only five years and had therefore expired in 2006 and 2007; they further relied on termination notices issued in July and August 2023.

With the consent of Plaintiff No. 1, Defendant No. 1 entered into a three-year co-publishing agreement with Katha-O-Kahini Prakashani Pvt. Ltd. on 25 August 2020 for printing, publishing, marketing and distribution of the books.

After the death of Sima Das, Plaintiff No. 1 informed the defendants that Abhijit Das and Amitava Das had become the respective copyright holders of the two books.

The plaintiffs alleged that, after expiry of the co-publishing agreement on 24 August 2023, the defendants continued to print, publish, market and sell the books without authorization, despite cease-and-desist notices.

The defendants asserted that the original publication agreements continued to govern their rights, that they had continuously published the books for approximately two decades, and that the co-publishing agreement merely facilitated publication during the COVID-19 period.

The plaintiffs sought an interim injunction restraining further reproduction, publication, adaptation, distribution and sale of the books, along with appointment of a Special Officer to seize and destroy infringing goods and related materials.

Whether the plaintiffs established a prima facie case of copyright infringement warranting an interim injunction against the defendants’ continued printing, publishing, marketing and sale of the books.

Whether the publication agreements dated 15 June 2001 and 22 April 2002 had expired by operation of Section 19(5) of the Copyright Act, 1957, or continued by reason of the parties’ subsequent conduct and arrangements.

Whether the co-publishing agreement dated 25 August 2020 novated, rescinded or extinguished the original publication agreements under Section 62 of the Contract Act, 1872.

Whether the plaintiffs could seek relief despite questions concerning copyright devolution, non-joinder of Abhijit Das, and compliance with the alleged one-year notice requirement.

The Court applied Section 19(1) of the Copyright Act, 1957, which requires an assignment of copyright to be in writing and signed by the assignor or authorised agent, and Section 19(5), under which an assignment with no specified period is deemed to be for five years.

Section 54 was considered in relation to the proposition that an action for infringement must be brought by the copyright owner.

Section 62 of the Contract Act, 1872 was applied to the doctrine of novation, rescission and alteration: a subsequent agreement displaces the original only where the parties agree to substitute, rescind or completely alter it.

The Court relied on New Central Book Agency Pvt. Ltd. v. Smt. Madhusri Konar, 2014 SCC OnLine Cal 18353, for the principle that publication or partial assignment is co-terminous with the publication agreement unless copyright itself has been absolutely assigned.

The Court relied on Chrisomar Corporation v. MJR Steels Pvt. Ltd., (2018) 16 SCC 117, and Lata Construction v. Dr. Ramachandra Ramniklal Shah, (2000) 1 SCC 586, for the requirements of novation under Section 62.

The Court also applied the interim-injunction requirements of a prima facie case, balance of convenience and irreparable injury.

Although the Court accepted that the original agreements did not specify a term and observed that the five-year statutory period under Section 19(5) had expired, it found that the plaintiffs’ subsequent conduct created a serious prima facie question against immediate injunctive relief.

The plaintiffs had permitted Defendant No. 1 to publish, print, market and distribute the books from 2007 until 2020 without objection and had expressly consented in August 2020 to the co-publishing arrangement.

The co-publishing agreement was between Defendant No. 1 and Katha-O-Kahini, not the plaintiffs, and Clause 16 preserved payment of royalties under the original publication agreements.

Consequently, the Court held that there was no clear evidence of a complete substitution or extinguishment of the original agreements as required by Section 62 of the Contract Act.

The Court also found unresolved issues concerning the plaintiffs’ authority to sue. The alleged transfer or devolution of copyright from Sima Das to Abhijit Das and Amitava Das was not supported by sufficient documentary material, and Abhijit Das—identified as the copyright holder of one book—had not been joined as a party.

Further, the plaintiffs had not issued notice before July 2023 and had not clearly stated in the notices that the original 2001 and 2002 agreements themselves were being terminated; the alleged one-year notice requirement was also not complied with.

In these circumstances, the Court concluded that the plaintiffs had not demonstrated a clear prima facie right, balance of convenience or irreparable injury sufficient to restrain the defendants at the interlocutory stage.

The Court therefore refused the requested interim injunction, seizure and destruction orders, and dismissed G.A. (Com) No. 1 of 2023.

The decision was confined to the interlocutory application and left the underlying contractual, copyright ownership and infringement issues to be determined in the substantive proceedings.